On November 10, 2016, Judge David C. Godbey of the United States District Court for the Northern District of Texas held that two video upload patents were invalid under 35 U.S.C. § 101. The patents, owned by Youtoo Technologies, were asserted against Twitter, which acquired the Vine application in January 2013. Judge Godbey described the asserted patents as directed to a system of “receiving and distributing user-generated video content for distribution on television broadcasts and the Internet.”
A recent decision by the Federal Circuit Court of Appeals (Federal Circuit) reversed a summary judgment of invalidity due to patent ineligible subject matter. The two patents at issue cover automating a 3-D animation method for facial features. The district court based its decision on Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347, 2353, 189 L. Ed. 2d 296 (2014). The district court’s ruling primarily relied on the fact that the patents claim a method of automation that encompasses certain rules for creating the animation, but do not delineate these particular rules, thus preempting all such “rules-based” animatiion. In reversing that decision, the Federal Circuit provided insight into the determination of patent-eligible subject matter under Alice.
The Federal Circuit vacated and remanded a district court’s summary judgment determination that U.S. Patent No. 7,604,929 (“’929 patent”) is invalid under 35 U.S.C. § 101. The district court determined that the ’929 patent is directed to a patent-ineligible law of nature. The patent claims a process of preserving hepatocytes, a liver cell that can be used for testing, diagnostic, and treatment purposes. The district court concluded the patent claimed an ineligible law of nature: that hepatocytes are capable of surviving multiple freeze-thaw cycles. The district court also determined that the patented process lacks the requisite inventive concept and instead simply applied a well-understood freezing process.
On Monday, March 21, 2016, Sequenom, Inc. filed a petition for writ of certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 14-1139 (Fed. Cir. June 12, 2015). The question posed to the Supreme Court centers around the patentability of diagnostic claims applied to newly-discovered natural phenomena.
The claimed work dates back to 1996, when two doctors discovered paternal cell-free fetal DNA (cffDNA) in maternal blood serum and plasma. With that discovery, the doctors developed a method of testing fetal DNA to determine, among other things, the risk of certain birth defects in a manner far less invasive than conventional techniques, which required DNA samples to be taken directly from the fetus or placenta. The doctors obtained U.S. Patent No. 6,258,540 covering the methods.
In granting a summary determination motion, ALJ Lord found that the patent owner’s (Owner) patents were directed to ineligible subject matter under 35 U.S.C. § 101. This was the first successful challenge to patentability under Section 101 at the International Trade Commission (ITC) since the Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International.